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January 11, 2018

Finjan, Inc. v. Blue Coat Systems, Inc. (Fed. Cir. 2018)

The year's first substantive patent-eligibility decision from the Federal Circuit is a rare victory for the patentee. It is also further evidence that the outcome of an eligibility analysis may be more dependent upon how the analysis is carried out than the actual language of the claims under review.

Finjan asserted several patents against Blue Coat in the Northern District of California. After trial, the jury found that Blue Coat infringed four of these patents, and awarded $39.5 million in damages. Then, the District Court held a bench trial to address Blue Coat's patent eligibility challenge to Finjan's U.S. Patent No. 6,154,844. The District Court found the claims eligible, and Blue Coat appealed both verdicts.

Claim 1 of the '844 patent recites:

A method comprising: receiving by an inspector a Downloadable; generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

The District Court's claim construction order held that the term "Downloadable" means "an executable application program, which is downloaded from a source computer and run on the destination computer," and that the term "Downloadable security profile that identifies suspicious code in the received Downloadable" means "a profile that identifies code in the received Downloadable that performs hostile or potentially hostile operations." Importantly, the Federal Circuit conducted its review in light of these definitions.

The Supreme Court's Alice Corp. v. CLS Bank Int'l case set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as "significantly more." On the other hand, a claimed improvement to a computer or technological process is typically patent-eligible.

The Court began by distinguishing Finjan's claim with those of Intellectual Ventures I LLC v. Symantec Corp., where the Court concluded that "by itself, virus screening is well-known and constitutes an abstract idea." Particularly, claim 1 (as construed) requires that "the security profile includes details about the suspicious code in the received downloadable, such as . . . all potentially hostile or suspicious code operations that may be attempted by the Downloadable." Thus, "[t]he security profile must include the information about potentially hostile operations produced by a behavior-based virus scan." In this light, the claimed invention is distinguishable from traditional virus scans that look for previously identified patterns of suspicious code in executable programs.

The Court further found that the claimed invention is an improvement to computer technology. Notably, behavior-based virus scans "can analyze a downloadable's code and determine whether it performs potentially dangerous or unwanted operations—such as renaming or deleting files." Thus, these scans can detect previously unknown viruses as well as infected code that has been purposely obfuscated or scrambled to avoid traditional virus scan technology. Moreover, since the security profile is linked to the downloadable, a computer can safely decide whether to access the downloadable by reviewing its security profile.

The Court compared claim 1 favorably to those of Enfish LLC v. Microsoft Corp., in that the claim recites a method that "enables a computer security system to do things it could not do before." Therefore, the Court found that the claim is "directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security writ large."

Blue Coat argued that the claim merely called for an outcome and did not specify how to attain that outcome. Such a claiming style was the kiss of death under § 101 in other cases, such as Apple, Inc. v. Ameranth, Inc., Affinity Labs of Tex., LLC v. DIRECTV, LLC, and the aforementioned Intellectual Ventures. But here, the Court concluded that the claims recite specific steps that accomplished a desired result. Based on this reasoning, and the holding that the invention is a technical improvement, the Court upheld the validity of the '844 patent.

This case further reinforces that procedural aspects of the § 101 inquiry can sometimes trump substantive aspects. The claim at issue is broad, somewhat vague, and could have very easily been found to not pass muster under the Alice test. But it also was construed by the District Court and, not unlike Enfish, the Federal Circuit reviewed the claim in light of its construction. Thus, due to the very nature and purpose of claim construction, the claim as construed was more specific than its plain language. In contrast, other panels have found more focused claims to be invalid when reviewed prior to construction (see, e.g., RecogniCorp, LLC v. Nintendo Co. Ltd. and Smart Systems Innovations, LLC v. Chicago Transit Authority).

This panel also refrained from summarizing the gist of the claim at a high level of abstraction then tautologically concluding that the claim is directed to an abstract idea. Here, the Court considered evidence beyond the claim itself to find that the invention was an improvement to a computing system.

All of this demonstrates that different Federal Circuit judges are applying the § 101 inquiry in different ways, and this practice very likely results in the validity of claims hanging on the luck of a panel draw. Perhaps if the stars align, 2018 will see the en banc Court decide how to apply the Alice test in a more consistent fashion going forward.

Comments

Interesting take: the importance of construction.

Of course, this already falls into the Two Step dance and the unbridled (unrestrained - and therefore arbitrary - vague [as in, Void for Vagueness]) power in the Gisting step of the Supreme Court's "Gist/Abstract" sword.

The very act provided by the Supreme Court of "evaluating the 'directed to' aspect of a claim is a violation not only of the law as written by Congress, but of the separation of powers limiting the authority of the Supreme Court.

There is no wonder then that lower courts (and not just the CAFC) will - in applying what the Supreme Court has put forth - create an endless mess of the statutory law.

Will Congress wake up and take back its authority provided by the Constitution?

The claim when understood is of a transformative nature, and therefore appears to fall in the positively eligible "process" category of section 101.

It is worth quoting the concluding part of the decision which is arguably of considerable importance:

"Apple, Affinity Labs, and other similar cases hearken back to a foundational patent law principle: that a result, even an innovative result, is not itself patentable. See Corning v. Burden, 56 U.S. 252, 268 (1853) (explaining that patents are granted “for the discovery or invention of some practicable method or means of producing a beneficial result or effect . . . and not for the result or effect itself”); O’Reilly v. Morse, 56 U.S. 62, 112–113 (1853)(invalidating a claim that purported to cover all uses of electromagnetism for which “the result is the making or printing intelligible characters, signs, or letters at a distance” as “too broad, and not warranted by law”).

Here, the claims recite more than a mere result. Instead, they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result. Moreover, there is no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result. There is no need to set forth a further inventive concept for implementing the invention. The idea is non-abstract and there is no need to proceed to step two of Alice."

To minimise our cases failing Alice, it is important to keep Corning v Burden in mind and ensure that the features needed to obtain the new result are clearly and explicitly stated. In the infamous Ariosa v Sequenom decision the second and arguably critical feature was "amplifying a paternally inherited nucleic acid from the serum or plasma sample ..." Although expressed as a process step, that feature specifies a result and nothing more. Questions that come to mind include: Amplifying what - the whole sequence or a selected part of it? By what reagents? To what level of amplification, e.g. for fluorescence or radiographic detection? Inclusion of answers to these questions which relate directly to the Corning dictum would have made it much harder for the Federal Circuit to reach the decision that it did.

I completely agree with you about vagueness, and briefs that I have filed make precisely that point. I also agree with you on the separation of powers point.

But self-help is better than no help, and is I believe in keeping with US traditions (over here Samuel Smiles wrote a book in the 19th century with precisely that title). We can help our clients by taking note of the case law relevant to each of the four eligible categories, and ensuring that the broad independent claims that we draft fall into the selected one of them.

Why are such "result" based steps in method claims not treated under the now broadened (as of Williamson) 112(f). Claiming a "step for" achieving a result is fine, and allowed by 112, but in turn the step limited to the algorithm for achieving that result that is in the spec.

As the federal court has explicitly ruled that the actual words "means for" mean almost nothing with respect to apparatus claim, why has that not crossed over into method claims yet? Claiming a step for achieving a result--even absent the words "step for" should invoke 112(f), and a lot of this would be taken care of.